Netra Holdings Pty Ltd v Fure Concept Technology Pty Ltd

This matter concerned an opposition to the registration of a trade mark by Netra Holdings Pty Ltd (the applicant) against Fure Concept Technology Pty Ltd (the opponent). The dispute centred on the rightful proprietorship of a trade mark, which was one of several logo-style designs created by a graphic designer, Michelle Sangster, at the request of Mr Bloodworth, a director of the applicant, following discussions with Kevin Hardwick of the opponent. The opponent, a family business involved in the installation of home automatic control systems, had engaged the applicant as an exclusive subcontractor.

The primary legal issue before the Hearing Officer was whether the applicant was the owner of the trade mark, as provided for under section 58 of the relevant Act, which permits opposition to trade mark registration on the ground that the applicant is not the owner. The opponent also pressed grounds of opposition under section 42(b) of the Act, alleging that the use of the trade mark would be contrary to law.

The Hearing Officer applied the principles established in *Shell Co of Australia Ltd v Rohm & Haas Co*, which state that a claim to proprietorship of an unused trade mark is based on the combined effect of authorship, the intention to use the mark in connection with goods, and the application for registration. Authorship was defined as the origination or first adoption of the sign as a trade mark. The Hearing Officer found that while Mr Bloodworth initiated the process of engaging a designer, the genesis of the trade mark lay in conversations between Kevin Hardwick and Mr Bloodworth, and the designs were ultimately provided to Kevin Hardwick. The Hearing Officer concluded that the applicant was not the owner of the trade mark.

Consequently, the ground of opposition under section 58 succeeded. As at least one ground of opposition had been established, the opposition was upheld, and the application for registration of the trade mark was refused. The applicant was ordered to pay the opponent's costs.